adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Domain Administrator 2@2220.com

Case No. D2012-0525

1. The Parties

The Complainant is The Coca-Cola Company of Atlanta, United States of America (“United States”), represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Domain Administrator 2@2220.com of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <cokestudio.com> (the Domain Name) is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2012. On March 15, 2012, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On March 16, 2012, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.

The Center appointed Jon Lang as the sole panelist in this matter on April 23, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the COKE trade mark and associated marks for beverages. The Complainant’s reputation has been independently assessed and demonstrated by numerous consumer surveys and market reports. For example, the independent brand valuation consultancy Interbrand has ranked COCA-COLA (and its associated brands such as COKE and DIET COKE) as the world’s most valuable global brand every year since 2001. The Complainant enjoys a huge reputation in the COKE mark.

The Complainant first registered COKE in the United Kingdom in 1942. Since then the Complainant has become the owner of a large number of registrations around the world that consist of or contain the word COKE for a broad range of goods and services, including:

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

- The Complainant owns “Rights” in the COKE mark, as defined in the Policy.

- The Domain Name wholly contains the word “coke”. It is therefore highly similar to, and wholly incorporates, the Complainant’s rights. The word “studio” is not particularly distinctive of any goods or services and therefore does nothing to distinguish the Domain Name and COKE.

The Respondent has no rights or legitimate interests in respect of the Domain Name

- The website to which the Domain Name resolves consists of one “parked” page which contains links to sponsored websites such as a dieting website, a television channel website, a computer store website, and a website where one can download web browser software.

- There is no evidence that the Respondent has used, or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, or has been commonly known by the Domain Name, or has made a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain or to misleadingly divert consumers or to tarnish the Complainant’s COKE marks.

- There is no legal or business relationship between the Complainant and the Respondent which would give rise to any licence, permission or authorisation for the Respondent to use the Domain Name, or legitimately use the word COKE on a website.

- The Respondent has no rights or legitimate interests in respect of the Domain Name. The COKE mark is inextricably linked in the minds of consumers to the Complainant. The Domain Name was registered many years after the Complainant established its rights in the COKE mark through use and registration. The Domain Name was merely registered for the purpose of trading off the Complainant’s well-known COKE mark.

The Domain Name was registered and is being used in bad faith

- At the time the Domain Name was registered by the Respondent, on November 4, 2002, the Complainant had been the owner of the registered mark COKE for sixty years and had an extensive reputation through its worldwide use of COKE and other COKE related marks.

- Moreover, Coke Studios, an online chat game used for marketing the COCA-COLA/COKE brand and products, had been launched in January 2002 as part of the Coke Music site at the Complainant’s website, “www.mycoke.com”. Following this, the Complainant registered the domain name <cokestudios.com> on June 26, 2002. Coke Studios closed in December 2007. It is submitted that the launch of this online chat game in January 2002, and the registration of the related domain name in June 2002, was the likely reason behind the registration by the Respondent of the Domain Name in November 2002.

- The Respondent is not a licensee of the Complainant. The Complainant has never consented to the registration or use of the Domain Name by the Respondent.

- The Respondent is obtaining a financial benefit from web traffic diverted through the Domain Name to linked websites on the parking page. Given that the website has not been used for a legitimate commercial purpose since the date of registration and that the Complainant has a vast reputation in the COKE mark, the only reasonable inference that can be drawn is that the Domain Name was registered and used in bad faith with a view to attracting Internet users for commercial gain to the Respondent’s website or other on-line locations, by creating a likelihood of confusion with the Complainant's COKE mark as to the source, sponsorship, affiliation, or endorsement of its (the Respondent’s) website or location, or of a product or service on its website or location.

- Furthermore, given the Complainant’s reputation in COKE in relation to its sparkling non-alcoholic drinks, use of the term COKE in the Domain Name would be unfairly detrimental to the Complainant in that people or businesses would be confused into believing that it is registered to, operated or authorised by, or otherwise connected with the Complainant. The exclusive association of COKE in relation to carbonated non-alcoholic drinks with the Complainant would be damaged, and the use would take unfair advantage of, and capitalise on, the Complainant’s Rights in COKE.

- Given the Complainant’s well-known COKE trade mark, it is impossible to conceive of any good faith use of the Domain Name as any goods or services sold by the Respondent from the Domain Name would mistakenly be linked by consumers with the Complainant. Moreover, the Complainant’s customers seeking information on the Complainant’s COKE product would be diverted away from the Complainant, such that its legitimate business would be unfairly disrupted.

- The Complainant submits that, at the time the Domain Name was registered, the Respondent knew of the Complainant’s business and its COKE marks, and registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant has rights in its own trade marks for the purposes of the Policy.

The Domain Name incorporates the Complainant’s mark COKE in its entirety and is very much its dominant element, being a mark of world-wide fame placed first in the Domain Name and followed by the generic term, “studio”.

However, as the mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.

Given the highly distinctive nature of the mark COKE which is readily recognisable within the Domain Name (and very much its dominant element), the Panel is satisfied that the Domain Name <cokestudio.com> is confusingly similar to the Complainant’s trade mark, COKE.

Even if one were to adopt a possibly slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name.

Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. a parking page containing links to websites of others e.g. a dieting website, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda,
WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a parking page to which a domain name, that so obviously takes advantage of the fame of the trade mark to which it is confusingly similar, resolves, could be a bona fide offering.

As paragraph 2.6 of the second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, it is possible in certain circumstances for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. For instance, if a registrant intends to profit from the descriptive element of a domain name without intending to take advantage of a third party’s rights. However, as the panel made clear in Paris Hilton v. Deepak Kumar,
WIPO Case No. D2010–1364, if the owner of the domain name is using it in order “…to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267)”. The Respondent’s choice of domain name here seems a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant’s mark.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Whether or not the launch of the Complainant’s online chat game in January 2002 or its registration of the domain name <cokestudios.com> in June 2002, prompted the Respondent’s registration of the Domain Name in November 2002, the Respondent must have been aware of the Complainant’s marks, specifically COKE, at the time of registration.

One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once the Internet user arrives at the website, it is immediately clear, because it is a PPC site, or otherwise, that it is unconnected with the trade mark owner. The Internet user will have been confused, at least initially, as to the relationship between website and trade mark owner and that is enough to establish bad faith. Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <cokestudio.com> be transferred to the Complainant.